The Complainant is Milton Hotels Limited of Inverness, Scotland, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by BTO Solicitors, UK.
The Respondent is Hong Lu, Omegauk of Milton Keynes, UK, represented by Turner Parkinson LLP, UK.
The disputed domain name <milton-hotels.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on February 5, 2018. The Center transmitted its request for registrar verification to the Registrar the same day. The Registrar replied on February 6, 2018, confirming the identity of the registrant and providing her contact details. The Registrar also confirmed that the Domain Name was created on September 18, 2014, expires on September 18, 2019, and has been placed under a locked status to prevent transfers or changes during the proceedings; and that the registration agreement is in English and requires the registrant to consent to the jurisdiction of the courts of King County, Washington.
The Complaint as filed requested that the Domain Name be transferred to the Complainant, failing which that it be cancelled. Following a query by the Center, the Complainant filed an amended Complaint on February 22, 2018, in which it requested transfer as the only remedy.
The Center verified that the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2 and 4 of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 27, 2018. In accordance with paragraph 5 of the Rules, the due date for Response was March 19, 2018. On March 7, 2018, the Respondent stated that it could not find a copy of the Complaint and requested an extension of 4 days until March 23, 2018, to submit the Response. The Center granted the requested extension on March 9, 2018, and resent copies of the Complaint and Amended Complaint to the Respondent. On March 19, 2018, the Respondent submitted a request for a further extension to submit the Response until April 6, 2018. This request was opposed by the Complainant and refused by the Center. The Response was filed with the Center on March 23, 2018. The Respondent elected in the Response to have the dispute decided by a three-member Panel.
Following the filing of the Response the Complainant wrote to the Respondent and the Center stating that the Response inaccurately claimed that the Respondent’s nearest hotel at Dunkeld is 100 miles from the Complainant’s hotels, whereas the Respondent has a nearer hotel at Spean Bridge, 53 miles away. The Respondent sent an amended Response to the Center on March 28, 2018, in which he accepted that the nearest hotel is at Spean Bridge, 53 miles away. Since the amended Response merely corrects an inaccuracy identified by the Complainant, the Panel has exercised its discretion to admit it.
The Center appointed Jonathan Turner, Andrew D. S. Lothian and The Hon Neil Brown Q.C. as panelists in this matter on April 27, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
The Complainant is owned and directed by members of a family with the surname “Milton” and operates a hotel business under the name “Milton Hotels”. The business was established by William and Mary Milton who purchased the West End Hotel in Fort William, Scotland in or about 1955. The business traded as the “William W Milton Partnership” from 1965 until 1968, when companies were incorporated under the names “Milton Management Ltd” and “Milton Motor In Ltd”. In about 1970 the business acquired the right to use the name “Milton Hotels Ltd” from a third party and has traded under the name “Milton Hotels” since then. In 1971 Milton Hotels Ltd was incorporated as a parent company of Milton Management Ltd and Milton Motor In Ltd. The business was subsequently hived up in 1993 to the Complainant, which was then renamed Milton Hotels Ltd.
The West End Hotel was sold and a new hotel, known as the “Milton Hotel” was constructed on the outskirts of Fort William, opening in December 1965. 60 budget rooms were built next to this hotel in 1968 and called the “Milton Motor In”. This establishment was later remodeled and annexed to the Milton Hotel. In 1970 the business bought another hotel in Fort William, which was called the “Alexandra Milton”. In 1972 the business acquired a hotel in Oban, Scotland, which it named the “Caledonian Milton Hotel”. In the late 1970s the business acquired a further hotel in Inverness, Scotland, which was named the “Palace Milton Hotel”. In 1991 the business acquired a hotel in Stirling, Scotland, which was called the “Golden Lion Milton Hotel”. Between 1999 and 2001 the Complainant constructed and opened a hotel in Glasgow under the name the “Glasgow Milton Hotel”.
The Complainant subsequently sold the Caledonian Milton Hotel (Oban) in August 2002, the Golden Lion Milton Hotel (Stirling) and the Fort William Hotels in 2003, and the Glasgow Milton Hotel in 2005. Since then, the Complainant has focused on developing the Palace Milton Hotel (Inverness). In 2016 the Complainant purchased the Winston Milton Guest House and Cottage in Inverness. The Complainant currently has a turnover of GBP 4.2 Million.
The Complainant owns the domain name <miltonhotels.com>, which is pointed to its website.
The Respondent and her husband, Dr Chen, are directors of Omega Travel Ltd. Dr. Chen is also the sole director and shareholder of Oldbrook Ltd, which trades as “The Milton Hotels and Residences Group” and operates a number of hotels in Scotland, England, France and Italy. Some of these hotels in Scotland are registered as owned by Oldbrook Ltd and some as owned by Chinese Enterpriser Ltd, another company of which Dr Chen is a director and majority or sole shareholder. The Domain Name is pointed to a website promoting the Milton Hotels and Residences Group.
The Complainant’s agents sent a “without prejudice” letter to Oldbrook Ltd on August 29, 2017. Oldbrook Ltd’s agents replied on October 25, 2017. The Complainant’s agents sent a further “without prejudice” letter to the Respondent on January 26, 2018, and did not receive any reply.
The Complainant contends that it has reputation and goodwill under the name “Milton Hotels” by virtue of the longstanding use of this name by its business. The Complainant submits that the Domain Name is confusingly similar to this mark and provides details of and documents relating to a number of instances of confusion that have occurred. The Complainant points out that the Domain Name differs from its own domain name only by the insertion of a hyphen between the words “milton” and “hotels”, that it is used to promote a business in the same field and the same geographic area, and that many customers do not speak English as their first language.
The Complainant considers that the Respondent does not have any right or legitimate interest in respect of the Domain Name. In this regard, the Complainant notes that the Respondent does not use the Domain Name herself and that it is directed to the website of the Milton Hotels and Residences Group operated by Oldbrook Ltd. The Complainant states next that Oldbrook Ltd commenced using the name “Milton” in January 2015 at the earliest and that the website at the Domain Name went live in April 2015.
The Complainant maintains that the Respondent and Oldbrook Ltd must have been aware of its business and trading name when the Domain Name was registered. The Complainant alleges that the Domain Name was registered in bad faith to disrupt the Complainant’s business and to capitalize on its reputation.
As mentioned above, the Complainant requests a decision that the Domain Name be transferred to it.
The Respondent does not accept that “Milton Hotels Ltd” constitutes an unregistered mark of the Complainant and denies that the Domain Name is confusingly similar to it or to the Complainant’s domain name <miltonhotels.com>. The Respondent considers that the domain names are differentiated by a prominent hyphen and that the parties’ hotels are in different locations. The Respondent adds that her business mainly targets Chinese tour groups, which are not the primary target of the Complainant’s business.
The Respondent states that her husband and fellow director, Dr Chen, adopted the name “Milton Hotels and Residences” because he is based in Milton Keynes, England. She claims that she used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services before any notice of dispute. She provides links to and printouts of various reports regarding the business run by Dr Chen and herself and an image of the website at the Domain Name in 2015 as recorded by the Internet Archive (“WayBackMachine”). The Respondent submits that she has a right or legitimate interest in respect of the Domain Name.
The Respondent denies that she registered or is using the Domain Name in bad faith. She states that it was not registered or acquired primarily for the purpose of sale, rental or other transfer to the Complainant or to a competitor of the Complainant, nor to prevent the Complainant from reflecting any mark in a corresponding domain name. She does not regard the parties as competitors and denies that the Domain Name was registered primarily to disrupt the Complainant’s business. She also denies that the Domain Name was registered intentionally to attract Internet users to her website for commercial gain by creating a likelihood of confusion with any mark of the Complainant. To the contrary, she asserts that the Domain Name has been used for several years in relation to businesses with which she is associated.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove: (i) that the Domain Name is identical or confusingly similar to a mark in which it has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. Panels have held that these requirements must be proved on the balance of probabilities: see section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
It is convenient to consider each of these requirements in turn.
The Panel is satisfied on the evidence that the Complainant has rights in the mark MILTON HOTELS by virtue of its use as a trading name for its business since 1970 and of “Milton Hotel” as a component of the names of individual hotels operated by that business in a number of cities in Scotland since 1965. Although “Milton” is a common surname in the UK, it is likely that a substantial number of customers, former customers and others now associate the name “Milton Hotels” specifically with the Complainant’s business. In the Panel’s view, this use is likely to have established goodwill under the name “Milton Hotels” that could be protected by a claim for passing off under UK law in appropriate cases.
The Panel is also satisfied that the Domain Name is confusingly similar to this mark, from which it differs only in the insertion of a hyphen between the words “Milton” and “Hotel” and the addition of the “.com” generic Top-Level Domain. Neither of these differences is sufficient to distinguish the Domain Name from the mark MILTON HOTELS; Internet users looking for a website of the Complainant are liable to be confused.
The Panel finds that the first requirement of the UDRP is satisfied.
The Panel finds on the evidence that the Domain Name has been used prior to notice of this dispute by a business with which the Respondent is connected operating under the name “The Milton Hotels and Residences Group”. A critical question is whether the use of these names by this business has been bona fide.
The press cuttings exhibited by the Respondent do not show use by this business of a name containing “Milton” before March 22, 2018, when the Cumberland News and the News & Star referred to a Carlisle hotel becoming part of a chain of “Milton Hotels” and being renamed the “Milton Hilltop Hotel”. However, the same report in the Cumberland Newsis exhibited by the Complainant with an indication that it was published on February 27, 2015.
The Domain Name was registered in September 2014 and the Respondent’s exhibits include a print of a web page recorded by the Internet Archive which is said by the Respondent to be from 2015. This shows prominent use of the word “Milton” in both an overall name “Milton Hotels & Residences” and the names of several individual hotels of the form “Milton Paris”, “Milton Birnam”, etc.
The Panel carried out its own examination of entries in the Internet Archive for the address “ www.milton-hotels.com”, which appeared to confirm that a page of this form was indeed recorded on August 21, 2015 (see section 4.8 of the WIPO Overview 3.0 on the topic of panels’ limited factual research into matters of readily accessible public record). There is no evidence that the appearance of the recorded page has been changed by a subsequent substitution of images integrated into it. A further snapshot from January 2016 includes a copyright notice dated 2016 in text.
The Panel therefore finds that the Domain Name, the business name “Milton Hotels & Residences”, and names of individual hotels of the form “Milton Birnam” have been used by this business since at least August 2015. The absence of any objection to this use by the Complainant until August 2017 indicates that it was not evidently in bad faith.
It must also be borne in mind that “Milton” is a common surname and that is not unusual for two or more hotels to have similar names, particularly if they are in different towns.
In all the circumstances, the Panel finds that the Domain Name and corresponding names have been used in connection with a bona fide offering of services by a business in which the Respondent participates prior to notice of the dispute, and that the Respondent should therefore be regarded as having a right or legitimate interest in respect of the Domain Name in accordance with paragraph 4(c)(i) of the UDRP.
At all events, the Panel is not satisfied on the balance of probabilities that the Respondent has no right or legitimate interest in respect of the Domain Name. Accordingly, the Panel concludes that the second requirement of the UDRP is not met on the evidence that has been filed.
For the reasons set out above, the Panel is also not satisfied on the balance of probabilities that the Domain Name was registered and is being used in bad faith. The third requirement of the UDRP has not been met.
In the light of these findings, the Complaint must be denied.
However, it should be emphasized that these findings do not mean that any or all use of the Domain Name or corresponding names by businesses of the Respondent and/or her husband has been or will be lawful. The UDRP provides a remedy by a simplified procedure in cases where domain names are registered in bad faith without any justification. It is not intended to resolve more complex disputes, which can be submitted to national courts for determination under the applicable law.
The Respondent has not alleged reverse domain name hijacking. Although the Panel finds that the Complainant has not proved the second and third substantive requirements set out in the UDRP, the Panel does not regard the Complaint as so lacking in foundation that it must have been brought in bad faith or that it constitutes an abuse of the UDRP.
For the foregoing reasons, the Complaint is denied.
Jonathan Turner
Presiding Panelist
Andrew D. S. Lothian
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: May 11, 2018
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